Thursday, October 19, 2017

Applicant Soundscape, Inc. pulled out all the stops but its arguments for reversal of this Section 2(d) refusal failed to move the TTAB. The Board affirmed the refusal to register the mark SOUNDSCAPE for various sound equipment and electronic devices, finding the mark likely to cause confusion with the identical mark registered for repair and installation services and retail store services relating to high fidelity equipment. In re Soundscape, Inc., Serial No. 76620682 (October 16, 2017) [not precedential] (Opinion by Judge Anthony R. Masiello).

The cited registration identifies the type of retail stores that would sell the sound equipment identified in the application at issue. The evidence revealed "at least one" retailer that offers its own brand of sound equipment alongside others. There are no limitations as to trade channels in the application or cited registration, and so the Board "must anticipate the possibility that Applicant's goods will be sold in retail stores like Registrant's." Applicant argued that its goods are "for professional and commercial applications," but there was no such limitation in its trademark application.

Applicant contended that registrant's services are rendered to a local market via a single store in Baltimore. The Board pointed out, however, that this limitation cannot be read into the registration; the registration is evidence of registrant's right to exclusive use of its mark in nationwide commerce. Similarly as to applicant's claim that it sells almost exclusive by phone, catalog, and internet channels, nothing in its application would restrict sales of the goods from being sold through a showroom or with retailers like registrant.

Next, applicant asserted that its own customers are sophisticated and that customers in registrant's stores are assisted by knowledgeable salespeople. Again the Board noted that there are no such limitations in the application and many of applicant's goods are ordinary consumer items. Moreover, there was no evidence that retail store personnel provided sophisticated guidance.

Applicant then claimed that there is an oral coexistence agreement with registrant, and the two have coexisted for many years without confusion. However, applicant provided no information upon which the Board could assess the supposed agreement. There was no corroboration from registrant as to the agreement's terms, or even its existence. Similarly an ex parte assertion regarding lack of confusion carries little weight absent details regarding the use and absent corroboration by the other party.

Finally, applicant pointed to its ownership of a decades-old registration for the mark SOUNDSCAPE for "outdoor loudspeakers," arguing that this case is similar to In re Strategic Partners, Inc. There, the Board reversed a refusal to register ANYWEAR for footwear because applicant already owned a registration for the plural ANYWEARS for footwear, which earlier registration had coexisted with the cited registration for more than five years. Here, in contrast, the goods in the involved application are substantially broader than the "outdoor speakers" of the prior registration.